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EXHIBIT 10.32
INTELLECTUAL PROPERTY SECURITY AGREEMENT
Among
Intracel Corporation,
Xxxxxxx, Inc.,
PerImmune Holdings, Inc. and
PerImmune, Inc.
and
the holders of the 12%
Guaranteed Senior Secured Primary Notes
due August 1, 2003 of
Intracel Corporation
and
the holders of the 12%
Guaranteed Senior Escrow Notes
due August 1, 2003 of
Intracel Corporation
Dated August 25, 1998
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INTELLECTUAL PROPERTY SECURITY AGREEMENT
INTELLECTUAL PROPERTY SECURITY AGREEMENT dated August 25, 1998,
among Intracel Corporation, a Delaware corporation (together with its successors
and assigns, the "Company"), the Company's wholly-owned subsidiaries, Xxxxxxx,
Inc. ("Xxxxxxx"), PerImmune Holdings, Inc. ("Holdings") and PerImmune, Inc.
("PerImmune" and, together with Xxxxxxx and Holdings, the "Subsidiaries") and
the holders of the 12% Guaranteed Senior Secured Promissory Notes of the Company
(the "Guaranteed Senior Secured Primary Notes") and the holders of the 12%
Guaranteed Senior Secured Escrow Promissory Notes ("Guaranteed Senior Secured
Escrow Notes") of the Company (collectively, the "Notes") issued pursuant to
that certain Securities Purchase Agreement, dated as of the date hereof, by and
among the Company and the other parties thereto (the "Purchase Agreement"). As
used herein, all capitalized terms not otherwise defined herein shall have the
meanings set forth in the Purchase Agreement.
WITNESSETH:
WHEREAS, the Company is to issue 12% Guaranteed Senior Secured
Primary Promissory Notes in the aggregate original principal amount of
$35,000,000 and 12% Guaranteed Senior Secured Escrow Promissory Notes in the
aggregate original principal amount of $6,000,000;
WHEREAS, in order to secure the performance of the obligations of
the Company under the Purchase Agreement, the Notes and the Ancillary Agreements
(the "Obligations") and the guaranties relating to the Obligations executed on
the date hereof by each of the Subsidiaries, the parties hereto entered into a
Security Agreement as of the date hereof ("Security Agreement") regarding the
terms and conditions of the Company's and Subsidiaries' (together the "Company
Parties") grant of a security interest in the certain Collateral (as defined
therein), including the Intellectual Property Collateral (as defined below) to
the Holders;
WHEREAS, pursuant to and in connection with the Security
Agreement, and also in order to secure the performance of the Obligations and
the guaranties relating to the Obligations, the parties hereto are entering into
this Intellectual Property Security Agreement to confirm and supplement the
terms and conditions of the Company Parties' grant of security interest, as set
forth in the Security Agreement, in the Intellectual Property Collateral (as
defined below) to the Holders;
WHEREAS, unless otherwise defined in this Agreement or in the
Credit Agreement, terms defined in Article 8 or 9 of the Uniform Commercial Code
in effect in the State of New York ("N.Y. Uniform Commercial Code") are used in
this Agreement as such terms are defined in such Article 8 or 9.
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NOW, THEREFORE, in consideration of the premises and other
benefits to the Company Parties, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto hereby agree as follows:
SECTION 1. Grant of Security. As collateral security for the
payment and performance in full of the Obligations in accordance with their
respective terms, the Company Parties hereby pledge, assign, transfer and grant
to the Holders as to all Intellectual Property Collateral (defined below), a
first priority perfected continuing security interest, except with respect to
certain Intellectual Property Collateral listed on Exhibit A-1 to the Security
Agreement in which Akzo Nobel Pharma International, B.V., as Collateral Agent
under the Intellectual Property Security Agreement dated August 13, 1996 (the
"Collateral Agent"), has a first priority security interest (the "Akzo Security
Interest Collateral"), and with respect to the Akzo Security Interest
Collateral, a second priority perfected security interest until such time as
payment in full of the Debt underlying the Akzo Security Interest Collateral has
been made and, at such time, a first priority perfected security interest in the
Akzo Security Interest Collateral, in all of such Company Party's right, title
and interest in and to the following, whether now owned or hereafter acquired by
such Company Party and whether now or hereafter existing (collectively, the
"Intellectual Property Collateral"):
(a) all patents, patent applications and patentable inventions,
including, without limitation, each patent and patent application
identified in Schedule I attached hereto and made a part hereof, and
including without limitation (i) all inventions and improvements
described and claimed therein, (ii) the right to xxx or otherwise
recover for any and all past, present and future infringements and
misappropriations thereof, (iii) all income, royalties, damages and
other payments now and hereafter due and/or payable with respect thereto
(including, without limitation, payments under all licenses entered into
in connection therewith, and damages and payments for past and future
infringements thereof), and (iv) all rights corresponding thereto
throughout the world and all reissues, divisions, continuations,
continuations-in-part, provisionals, substitutes, renewals, and
extensions thereof, all improvements thereon and all other rights of any
kind whatsoever of such Company Party accruing thereunder or pertaining
thereto (the "Patents");
(b) all trademarks, service marks, trade names, trade dress or
other indicia of trade origin, trademark and service xxxx registrations,
and applications for trademark or service xxxx registrations and any
renewals thereof, including, without limitation, each registration and
application identified in Schedule II attached hereto and made a part
hereof, and including without limitation (i) the right to xxx or
otherwise recover for any and all past, present and future infringements
and misappropriations thereof, (ii) all income, royalties, damages and
other payments now and hereafter due and/or payable with respect thereto
(including, without limitation, payments under all licenses entered into
in connection therewith, and damages and payments for past or future
infringements thereof), and (iii) all rights corresponding thereto
throughout the
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world and all other rights of any kind whatsoever of such Company Party
accruing thereunder or pertaining thereto, together in each case with
the goodwill of the business connected with the use of, and symbolized
by, each such trademark, service xxxx, trade name, trade dress or other
indicia of trade origin (the "Trademarks");
(c) all copyrights, whether statutory or common law, and whether
or not the underlying works of authorship have been published, and all
works of authorship and other intellectual property rights therein, all
copyrights of works based on, incorporated in, derived from or relating
to works covered by such copyrights, all right, title and interest to
make and exploit all derivative works based on or adopted from works
covered by such copyrights, and all copyright registrations and
copyright applications, and any renewals or extensions thereof,
including, without limitation, each copyright registration and copyright
application, if any, identified in Schedule III attached hereto and made
a part hereof, and including, without limitation, (i) the right to
print, publish and distribute any of the foregoing, (ii) the right to
xxx or otherwise recover for any and all past, present and future
infringements and misappropriations thereof, (iii) all income,
royalties, damages and other payments now and hereafter due and/or
payable with respect thereto (including, without limitation, payments
under all licenses entered into in connection therewith, and damages and
payments for past or future infringements thereof), and (iv) all rights
corresponding thereto throughout the world and all other rights of any
kind whatsoever of such Company Party accruing thereunder or pertaining
thereto (the "Copyrights");
(d) all license agreements with any other person in connection
with any of the Patents, Trademarks or Copyrights, or such other
person's patents, trade names, trademarks, service marks or copyrights,
whether such Company Party is a licensor or licensee under any such
license agreement, including, without limitation, the license agreements
listed on Schedule IV attached hereto and made a part hereof, subject,
in each case, to the terms of such license agreements, including,
without limitation, terms requiring consent to a grant of a security
interest, and any right to prepare for sale, sell and advertise for
sale, all Inventory (as defined in the Security Agreement) now or
hereafter owned by such Company Party and now or hereafter covered by
such licenses (the "Licenses"); and
(e) all proceeds of any and all of the foregoing Intellectual
Property Collateral (including, without limitation, proceeds that
constitute property of the types described in clauses (a) - (d) of this
Section 1) and, to the extent not otherwise included, all (i) payments
under insurance (whether or not the Holders are the loss payees
thereof), or any indemnity, warranty or guaranty, payable by reason of
loss or damage to or otherwise with respect to any of the foregoing
Intellectual Property Collateral, and (ii) cash.
Until the Obligations shall have been satisfied in full and this Agreement shall
have been terminated, the Company and its Subsidiaries (as defined in the
Purchase Agreement), shall
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not, without the Holders' prior written consent, which consent will not be
unreasonably withheld, create, incur or assume any pledge, sale, license or
assignment of any of the Intellectual Property Collateral, or grant, convey or
hypothecate any interest in the Intellectual Property Collateral, or take any
action the effect of which is to have created any Lien, encumbrance, claim,
charge, preference, priority or other restriction on the Intellectual Property
Collateral.
SECTION 2. Security Agreement. The security interest granted
hereby has been granted in conjunction with the security interest granted to the
Holders under the Security Agreement, which this Intellectual Property Security
Agreement supplements. Except as supplemented hereby, the Security Agreement
shall remain in full force and effect in accordance with its terms.
SECTION 3. Confirmation of Security Interest. The Company Parties
hereby confirm that pursuant to the Security Agreement, for good and valuable
consideration, the Company Parties have granted to the Holders a continuing
security interest in and to the Company Parties' entire right, title and
interest in all of the Collateral, including the Intellectual Property
Collateral, that the Company Parties' right, title and interest in the
Collateral is subject to such interest of the Holders and that such security
interest therein shall continue unimpaired by the security interest of the
Collateral granted hereby which serves as evidence of the continuing nature of
such interest in favor of the Holders.
SECTION 4. Representations and Warranties. Each Company Party
represents and warrants as to itself and its Intellectual Property Collateral as
follows:
(a) Such Company Party is the legal and beneficial owner of the
entire right, title and interest in and to the Intellectual Property
Collateral of such Company Party free and clear of any Lien, claim,
option or right of others, except for the liens and security interests
created by this Agreement and the lien created in favor of the
Collateral Agent. No effective financing statement or other instrument
similar in effect covering all or any part of such Intellectual Property
Collateral or listing such Company Party or any trade name of such
Company Party as debtor is on file in any recording office (including,
without limitation, the United States Patent and Trademark Office and
the United States Copyright Office), except such as may have been filed
in favor of the Holders relating to the Loan Documents and such as have
been filed in favor of the Collateral Agent.
(b) Set forth in Schedule I is a complete and accurate list of
all patents and all patent applications owned by the Company Parties.
Set forth in Schedule II is a complete and accurate list of all
trademark and service xxxx registrations and all trademark and service
xxxx applications owned by the Company Parties. Set forth in Schedule
III is a complete and accurate list of all copyright registrations and
copyright applications owned by the Company Parties. Set forth in
Schedule IV is a complete and accurate list of all Licenses owned by the
Company Parties in which a Company
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Party is (i) a licensor with respect to any of the Patents, Trademarks
or Copyrights, or (ii) a licensee of any other person's patents, trade
names, trademarks, service marks or copyrights. Except as set forth in
Schedule II, all necessary filings and recordations have been made to
protect and maintain the patents, patent applications, trademark and
service xxxx registrations, trademark and service xxxx applications,
copyright registrations, copyright applications and Licenses set forth
in Schedules I, II, III and IV.
(c) Each patent, patent application, trademark or service xxxx
registration, trademark or service xxxx application, copyright
registration and copyright application of such Company Party set forth
in Schedules I, II and III is subsisting and has not been adjudged
invalid, unregistrable or unenforceable, in whole or in part. Each
License of such Company Party identified in Schedule IV is validly
subsisting and has not been adjudged invalid or unenforceable, in whole
or in part, and is valid and enforceable. Such Company Party is not
aware of any uses of any item of Intellectual Property Collateral which
could be expected to lead to such item becoming invalid or
unenforceable, including unauthorized uses by third parties and uses
which were not supported by the goodwill of the business connected with
such Intellectual Property Collateral.
(d) Such Company Party has not made a previous assignment,
transfer or agreement constituting a present or future assignment,
transfer or encumbrance of any of the Intellectual Property Collateral
other than the Intellectual Property Security Agreement dated August 13,
1996 with respect to the Akzo Security Interest Collateral. Such Company
Party has not granted any license (other than those listed on Schedule
IV hereto), release, covenant not to xxx, or non-assertion assurance to
any person with respect to any part of the Intellectual Property
Collateral.
(e) Such Company Party has used proper statutory notice in
connection with its use of each patent, each registered trademark and
service xxxx and each copyright contained in Schedules I, II and III.
(f) This Agreement creates in favor of the Holders a valid first
priority security interest in the Intellectual Property Collateral of
the Company Parties, except with respect to the Akzo Security Interest
Collateral and, with respect thereto, a second priority continuing
security interest until such time as payment in full of the Debt
underlying the Akzo Security Interest Collateral has been made and, at
such time, a first priority security interest in the Akzo Security
Interest Collateral, securing the payment of the Obligations, and all
filings and other actions necessary or desirable to perfect and protect
such security interest have been duly taken.
(g) With the exception of the consent of the Collateral Agent,
no consent of any other Person and no authorization, approval or other
action by, and no notice to or filing with, any governmental authority
or regulatory body or other Person is
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required (i) for the assignment and grant by such Company Party of the
security interest assigned and granted hereby or for the execution,
delivery or performance of this Agreement by such Company Party, (ii)
for the perfection or maintenance of the security interest created
hereunder (including the first priority nature of such security
interest), except for the filing of financing and continuation
statements under the Uniform Commercial Code, which financing statements
have been duly filed, and the filing and recordal of this Agreement
with the United States Patent and Trademark Office and the United States
Copyright Office or (iii) for the exercise by the Holders of their
rights provided for in this Agreement or the remedies in respect of the
Intellectual Property Collateral pursuant to this Agreement.
(h) Except for the Licenses set forth in Schedule IV, the
Company Parties are not aware of any claims that are likely to be made
by any third party relating to any item of Intellectual Property
Collateral.
(i) Except as set forth in Schedule 3.13 of the Securities
Purchase Agreement, no claim has been made and is continuing or
threatened that any item of Intellectual Property Collateral is invalid
or unenforceable or that the use by such Company Party of any
Intellectual Property Collateral does or may violate the rights of any
Person. The Company Parties are not aware of any infringement of any
item of Intellectual Property Collateral.
(j) Such Company Party has taken all necessary steps to use
consistent standards of quality in the manufacture, distribution and
sale of all products sold and the provision of all services provided
under or in connection with any of the Trademarks and has taken all
reasonably necessary steps to ensure that all licensed users of any of
the Trademarks use such consistent standards of quality.
SECTION 5. Further Assurances. (a) Each Company Party agrees that
from time to time, at the expense of such Company Party, such Company Party will
promptly execute and deliver, and use its best efforts to cause to be executed
and delivered, all further instruments and documents, and take all further
action, that may be necessary or desirable, or that the Holders may request, in
order to perfect and protect any security interest assigned and granted or
purported to be assigned and granted hereby or to enable the Holders to exercise
and enforce its rights and remedies hereunder with respect to any part of the
Intellectual Property Collateral. Without limiting the generality of the
foregoing, each Company Party will execute and file such financing or
continuation statements, or amendments thereto, and such other instruments or
notices, as may be necessary or desirable, or as the Holders may request, in
order to perfect and preserve the security interest assigned and granted or
purported to be assigned and granted hereunder.
(b) Each Company Party hereby authorizes the Holders to file one
or more financing or continuation statements, and amendments thereto, relating
to all or any part of
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the Intellectual Property Collateral without the signature of such Company Party
where permitted by law. A photocopy or other reproduction of this Agreement or
any financing statement covering the Intellectual Property Collateral or any
part thereof shall be sufficient as a financing statement where permitted by
law.
(c) Each Company Party will furnish to the Holders from time to
time statements and schedules further identifying and describing the
Intellectual Property Collateral and such other reports in connection with the
Intellectual Property Collateral as the Holders may reasonably request, all in
reasonable detail.
(d) Each Company Party agrees that, should it obtain an ownership
interest in any patent, patent application, patentable invention, trademark,
service xxxx, trade name, trade dress, other indicia of trade origin, trademark
or service xxxx registration, trademark or service xxxx application, copyright,
work of authorship, copyright registration, copyright application or license,
which is not now a part of the Intellectual Property Collateral, (i) the
provisions of Section 1 shall automatically apply thereto, (ii) any such patent,
patent application, patentable invention, trademark, service xxxx, trade name,
trade dress, indicia of trade origin, trademark or service xxxx registration or
trademark or service xxxx application (together with the goodwill of the
business connected with the use of same and symbolized by same), copyright, work
of authorship, copyright registration, copyright application or license shall
automatically become part of the Intellectual Property Collateral, and (iii)
with respect to any ownership interest in any patent, patent application,
trademark or service xxxx registration, trademark or service xxxx application,
copyright registration, copyright application or license that such Company Party
should obtain, it shall give prompt written notice thereof to the Holders in
accordance with the provisions of the Security Agreement. Each Company Party
authorizes the Holders to modify this Agreement by amending Schedules I, II, III
and IV (and will cooperate with the Holders in effecting any such amendment) to
include any patent, patent application, trademark or service xxxx registration,
trademark or service xxxx application, copyright registration, copyright
application or license which becomes part of the Intellectual Property
Collateral under this Section.
(e) With respect to each patent, patent application, trademark or
service xxxx registration, trademark or service xxxx application, copyright
registration, copyright application and License, such Company Party agrees to
take all necessary steps, including, without limitation, in the United States
Patent and Trademark Office, the United States Copyright Office or in any court,
to (i) maintain each such patent, trademark or service xxxx registration,
copyright registration and License of such Company Party, and (ii) pursue each
such patent application, trademark or service xxxx application, and copyright
application now or hereafter included in the Intellectual Property Collateral of
such Company Party, including, without limitation, the filing of responses to
office actions issued by the United States Patent and Trademark Office and the
United States Copyright Office, the filing of applications for renewal or
extension, the filing of affidavits under Sections 8 and 15 of the United States
Trademark Act, the filing of divisional, continuation, continuation-in-part and
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substitute applications, the filing of applications for re-issue, renewal or
extensions, the payment of maintenance fees, and the participation in
interference, reexamination, opposition, cancellation, infringement and
misappropriation proceedings. Each Company Party agrees to take corresponding
steps with respect to each new or acquired patent, patent application, trademark
or service xxxx registration, trademark or service xxxx application, copyright
registration, copyright application or License to which it is now or later
becomes entitled. Any expenses incurred in connection with such activities shall
be borne by such Company Party. No Company Party shall, without the written
consent of the Holders, which consent will not be unreasonably withheld,
discontinue use of or otherwise abandon any patent or patentable invention,
trademark or service xxxx, or copyright identified in Schedules I, II and III,
or abandon any right to file an application for letters patent, trademark or
service xxxx registration, or copyright registration, or abandon any pending
application for a letters patent, trademark or service xxxx registration, or
copyright registration identified in Schedules I, II and III.
(f) Each Company Party agrees to notify the Holders promptly and
in writing if it learns (i) that any item of the Intellectual Property
Collateral may be determined to have become abandoned or dedicated or (ii) of
any adverse determination or the institution of any proceeding (including,
without limitation, the institution of any proceeding in the United States
Patent and Trademark Office or any court) regarding any item of the Intellectual
Property Collateral.
(g) In the event that any Company Party becomes aware that any
item of the Intellectual Property Collateral is infringed or misappropriated by
a third party, such Company Party shall promptly notify the Holders and shall
take such actions as such Company Party or the Holders deems reasonable and
appropriate under the circumstances to protect such Intellectual Property
Collateral, including, without limitation, suing for infringement or
misappropriation and for an injunction against such infringement or
misappropriation. Any expense incurred in connection with such activities shall
be borne by such Company Party.
(h) Each Company Party shall continue to use proper statutory
notice in connection with its use of each of its patents, registered trademarks
and service marks, and copyrights contained in Schedules I, II and III.
(i) Each Company Party shall take all steps which it or the
Holders deem reasonable and appropriate under the circumstances to preserve and
protect each item of its Intellectual Property Collateral, including, without
limitation, maintaining the quality of any and all products or services used or
provided in connection with any of the Trademarks, consistent with the quality
of the products and services as of the date hereof, and taking all steps
necessary to ensure that all licensed users of any of the Trademarks use such
consistent standards of quality.
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IN WITNESS WHEREOF, each Grantor has caused this Agreement to be
duly executed and delivered by its officer thereunto duly authorized as of the
date first above written.
INTRACEL CORPORATION
By: /s/ XXXXX X. XXXXXXXX
------------------------------------------
Name: Xxxxx X. XxXxxxxx
Title: President & Chief Executive Officer
XXXXXXX, INC.
By: /s/ XXXXX X. XXXXXXXX
------------------------------------------
Name: Xxxxx X. XxXxxxxx
Title: President & Chief Executive Officer
PERIMMUNE HOLDINGS, INC.
By: /s/ XXXXX X. XXXXXXXX
-----------------------------------------
Name: Xxxxx X. XxXxxxxx
Tide: President & Chief Executive Officer
PERIMMUNE, INC.
By: /s/ XXXXX X. XXXXXXXX
-----------------------------------------
Name: Xxxxx X. XxXxxxxx
Tide: President & Chief Executive officer
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NORTHSTAR HIGH YIELD FUND
By: /s/ XXXXXXX X. XXXXXX
-------------------------------
Name: Xxxxxxx X. Xxxxxx
Title: Vice President
NORTHSTAR HIGH TOTAL RETURN FUND
By: /s/ XXXXXXX X. XXXXXX
-------------------------------
Name: Xxxxxxx X. Xxxxxx
Title: Vice President
NORTHSTAR HIGH TOTAL RETURN FUND II
By: /s/ XXXXXXX X. XXXXXX
-------------------------------
Name: Xxxxxxx X. Xxxxxx
Title: Vice President
NORTHSTAR STRATEGIC INCOME FUND
By: /s/ XXXXXXX X. XXXXXX
-------------------------------
Name: Xxxxxxx X. Xxxxxx
Title: Vice President
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STATE OF WA )
) ss.:
COUNTY OF KING )
On the 20th day of August, 1998, before me personally came Xxxxx XxXxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at 0000
0xx Xx. Xxxxx, Xxxxxxx, XX and that he is the Pres/CEO of INTRACEL CORPORATION,
the corporation described in and which executed the above instrument; that he
has been authorized to execute said instrument on behalf of said corporation;
and that he signed said instrument on behalf of said corporation pursuant to
said authority.
/s/ XXXXXXXXX X. XXXXXXX-XXXXXXX
--------------------------------
Notary Public
------------------------------------
Notary Public
State of Washington
[Notarial Seal] XXXXXXXXX X. XXXXXXX-XXXXXXX
My Appointment Expires Jan. 15, 2002
------------------------------------
STATE OF WA )
) ss.:
COUNTY OF KING )
On the 20th day of August, 1998, before me personally came Xxxxx XxXxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at 0000
0xx Xx. Xxxxx, Xxxxxxx, XX and that he is the Pres/CEO of XXXXXXX, INC., the
corporation described in and which executed the above instrument; that he has
been authorized to execute said instrument on behalf of said corporation; and
that he signed said instrument on behalf of said corporation pursuant to said
authority.
/s/ XXXXXXXXX X. XXXXXXX-XXXXXXX
--------------------------------
Notary Public
------------------------------------
Notary Public
State of Washington
[Notarial Seal] XXXXXXXXX X. XXXXXXX-XXXXXXX
My Appointment Expires Jan. 15, 2002
------------------------------------
13
STATE OF WA )
) ss.:
COUNTY OF KING )
On the 20th day of August, 1998, before me personally came Xxxxx XxXxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at 0000
0xx Xx. Xxxxx, Xxxxxxx, XX and that he is the Pres/CEO of PERIMMUNE HOLDINGS,
INC., the corporation described in and which executed the above instrument; that
he has been authorized to execute said instrument on behalf of said corporation;
and that he signed said instrument on behalf of said corporation pursuant to
said authority.
/s/ XXXXXXXXX X. XXXXXXX-XXXXXXX
--------------------------------
Notary Public
------------------------------------
Notary Public
State of Washington
[Notarial Seal] XXXXXXXXX X. XXXXXXX-XXXXXXX
My Appointment Expires Jan. 15, 2002
------------------------------------
STATE OF WA )
) ss.:
COUNTY OF KING )
On the 20th day of August, 1998, before me personally came Xxxxx XxXxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at 0000
0xx Xx. Xxxxx, Xxxxxxx, XX and that he is the Pres/CEO of PERIMMUNE, INC., the
corporation described in and which executed the above instrument; that he has
been authorized to execute said instrument on behalf of said corporation; and
that he signed said instrument on behalf of said corporation pursuant to said
authority.
/s/ XXXXXXXXX X. XXXXXXX-XXXXXXX
--------------------------------
Notary Public
------------------------------------
Notary Public
State of Washington
[Notarial Seal] XXXXXXXXX X. XXXXXXX-XXXXXXX
My Appointment Expires Jan. 15, 2002
------------------------------------
14
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
On the 25th day of August, 1998, before me personally came Xxxxxxx Xxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at
Fairfield County, CT and that he is the Vice President of NORTHSTAR HIGH YIELD
FUND, the institution described in and which executed the above instrument; that
he has been authorized to execute said instrument on behalf of said institution;
and that he signed said instrument on behalf of said institution pursuant to
said authority.
/s/ XXXX XXXXXXX XXXXX
----------------------
Notary Public
XXXX XXXXXXX XXXXX
[Notarial Seal] NOTARY PUBLIC
MY COMMISSION EXPIRES FEB. 23, 0000
XXXXX XX XXX XXXX )
) ss.:
COUNTY OF NEW YORK )
On the 25th day of August, 1998, before me personally came Xxxxxxx Xxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at
Fairfield County, CT and that he is the Vice President of NORTHSTAR HIGH TOTAL
RETURN FUND, the institution described in and which executed the above
instrument; that he has been authorized to execute said instrument on behalf of
said institution; and that he signed said instrument on behalf of said
institution pursuant to said authority.
/s/ XXXX XXXXXXX XXXXX
----------------------
Notary Public
XXXX XXXXXXX XXXXX
[Notarial Seal] NOTARY PUBLIC
MY COMMISSION EXPIRES FEB. 23, 0000
00
XXXXX XX XXX XXXX )
) ss.:
COUNTY OF NEW YORK )
On the 25th day of August, 1998, before me personally came Xxxxxxx Xxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at
Fairfield County, CT and that he is the Vice President of NORTHSTAR HIGH TOTAL
REFUND FUND II, the institution described in and which executed the above
instrument; that he has been authorized to execute said instrument on behalf of
said institution; and that he signed said instrument on behalf of said
institution pursuant to said authority.
/s/ XXXX XXXXXXX XXXXX
----------------------
Notary Public
XXXX XXXXXXX XXXXX
[Notarial Seal] NOTARY PUBLIC
MY COMMISSION EXPIRES FEB. 23, 0000
XXXXX XX XXX XXXX )
) ss.:
COUNTY OF NEW YORK )
On the 25th day of August, 1998, before me personally came Xxxxxxx Xxxxxx
to me known, who, being by me duly sworn, did depose and say he resides at
Fairfield County, CT and that he is the Vice President of NORTHSTAR STRATEGIC
INCOME FUND, the institution described in and which executed the above
instrument; that he has been authorized to execute said instrument on behalf of
said institution; and that he signed said instrument on behalf of said
institution pursuant to said authority.
/s/ XXXX XXXXXXX XXXXX
----------------------
Notary Public
XXXX XXXXXXX XXXXX
[Notarial Seal] NOTARY PUBLIC
MY COMMISSION EXPIRES FEB. 23, 2003
16
SCHEDULE I
to
Intellectual Property Security Agreement
Patents and Patent Applications
17
SCHEDULE I
Title Country Patient # Allowed App # Filed App #
Monoclonal Antibodies
Tumor specific monoclonal antibodies US 4,828,991
Tumor associated monoclonal antibodies derived from US 4,997,762
human B-cell line 5,180,814
AT E71410
AU 589,351
635,511
BE 0151030
CA 473130
CH 0151030
DE P3585093
DK 408/85
EP 0151030
ES 539,987
FR 0151030
GB 0151030
GR 850,179
HU 209,519
IE 58,859
IL 74,156
91,045
IT 0151030
JP 2021518 269230/93
LU 0151030
NL 0151030
NZ 210,867
PT 79,894
SC 0131030
ZA 8,500,689
18
Title Country Patient # Allowed App # Filed App #
Tumor specific monoclonal antibodies US 5,106,738
Tumor associated monoclonal antibody 81AV78 US 5,348,880
XX 000000
XX 0000000
EP 92913154.8
FI 935038
XX 000000/00
XX 93/703412
WO US92/04023
Tumor associated monoclonal antibodies US 5,474,755
Monoclonal Antibody 88BV59 US 08/341469
AU 651,261
CA 2083542
EP 92203827.8
FI 925638
HU 9203932
ID P-005142
IL 103758
XX 000000/00
XX 92/23925
NO 924803
NZ 245443
TW 81109353
ZA ?2/8880
Monoclonal antibody 88BV59, subclones and method of making US 08/192069
AU 17425/95
CA 2158572
EP 95909472.3
FI 954700
JP 52078/95
19
Title Country Patient # Allowed App # Filed App #
KR 95/7Q4282
WO US95/01440
Tumor associated monoclonal antibody 123AV16 US 5,495,002
ID P-950285
WO EP95/00581
ZA 95/1113
In-vitro method for producing antigen specific human US 5,229,275
monoclonal antibodies
AT E123,311
AU 657,112
BE 0,454,225
CA 2,041,213
CH 0,454,225
DE 69,110,084.5
555
DK 0,454,225
EP 0,454,225
ES 0,454,225
FI 912,016
FR 0,454,225
GB 0,454,225
GR 3,017,162
IE 66,523
IT 0,454,225
XX 000000/00
XX 91/6661
NL 0,454,225
SE 0,454,225
ZA 91/2?98
Imaging infectious ????????????? US 5,549,882
20
Title Country Patent # Allowed App # Filed App #
Chelators
Method for purifying chelator conjugated
compounds US 5,244,816
AU 656,717
CA 2,069,303
DK 0488/92
EP 90915696.0
FI 921579
IE 3585/90
XX 000000/00
XX 92/700833
NZ 235,618
PT 95574
WO US90/05772
ZA 90/8095
Chelating agents for attaching metal ions
to proteins US 5,292,868
5,488,126
5,583,219
AT E128035
AU 638,757
BE 0429644
CA 2,033,086
CH 0429644
DE 69022542.3
DK 0429644
EP 0429644 952004?5.0
ES 0429644
FI 910.329
FR 0429644
GB 0429644
CE 1867/90
21
Title Country Patent # Allowed App # Filed App #
IT 0429644
XX 000000/00
XX 91/700100
NL 0429644
SE 0429644
WO US90/02910
ZA 90/4047
Technetium-99M labelling
of proteins US 5,317,091
AU 658,403
CA 2104943
EP 92907824.4
FI 933760
XX 000000/00
XX 93/702561
WO US92/01577
Chelator IDAC-2 and methods
for purifying chelator
conjugated compounds US 08/278721
08/442856
WO US95/09285
New Polyaminocarboxylate
chelators US 08/178875
WO US95/00068
Pre-Targeting
Site specific in vivo
activation of therapeutic
drugs US 5,433,955 07/300999
AT E123414
AU 648,015
BE 045?783
CA 2025599
CH 0454783
DE 69019959.7
DK 0454753
22
Title Country Patent # Allowed App # Filed App #
EP 0454783
ES 0454783
FI 913,511
FR 0454783
GB 0454783
IT 0454783
XX 000000/00
XX 90/702129
LU 0454783
NL 0454783
NO 912,864
SE 0454783
WO 90/00503
In Vivo Binding Pair Pretargeting US 5,578,289 08/452938
08/451267
AU 663,582
CA 2,107,558
EP 93906276 6
FI 934,857
ID P-005991
XX 000000/00
XX 93/703311
WO US93/01858
ZA 93/3035
High yield preparation of dimene to
decamene chitin oligomers US US/397?6?
IL 117052
WO US96/02705
23
Title Country Patent # Allowed App # Filed App #
Polymer affinity systems in the delivery US 5,686,071
of cytotoxic materials and other compounds
in the site of disease Immunotherapy
Active specific immunotherapy US 5,484,596 08/540298
CTAA 28A32, the antigen recognized by
MCA 28A32 US 5,521,285
AT 0537168
AU 660,927
BE 0537168
CA 2079601
XX 0000000
XX 0000000
DK 0537168
EP 0537168
ES 0537168
FI 000000
XX 0537168
GB 0537168
GR 0537168
IT 0537168
XX 000000/00
XX 92/702530
LU 0537168
NL 0537168
24
Title Country Patient # Allowed App # Filed App #
SE 0537168
WO US91/02459
Antigen recognized by MCA 16.88 US 5,338,832
AT E137674
AU 618,209
BE 0328578
CA 571,017
CH 0328578
DE P3855290.9
DK 1025/89
EP 0328578
FR 0328578
GB 0328578
HU 4187/88
IE 2034/88
IL 86,958
IT 0328578
JP 505583/89
LU 0328578
NL 0328578
NZ 225,280
SE 0328578
WO US88/02245
ZA 88/4777
Keyhole limpet hemocyanin composition with enhanced US 5,407,912 081343808
immunogenic activity
US 09/009,121
AU 605519194
CA 2121296
EP 942009978
25
Title Country Patent # Allowed App # Filed App #
FI 941725
ID P-940578
XX 000000/00
XX 94/8063
ZA 94/2510
Tumor associated epitope US 08/478591
CTAA 8IAV78, the antigen recognized
by human monoclonal US 5,595,738
antibody 81AV78
AU 20085/92
CA 2102422
EP 92912470.9
FI 934,963
XX 000000/00
XX 93/703413
Others WO US92/04108
Loukoregulin, an antitumor
lymphokine and its therapeutic uses US 4,849,506
5,082,657
AT E48617
AU 592,529
641,386
BE 0179127
CA 478,937
CH 0179127
DE P3574710.2
DK 170.781
170.423
E 0179127
FI 85,867
FR 0179127
GB 0179127
26
Title Country Patent # Allowed App # Filed App #
IT 0179127
JP 501862/85
300400/93
LU 0179127
NL 0179127
NQ 170423
SE 0179127
WO US85/00626
Urethral catheter and catherization process US 5,120,316
Immunoreactive peptides of apo(2) US 08/266407
5,597,908 08/457449
08/172461
08/892544
AU 81,606/94
CA 2138605
EP 942036534
FI 945976
ID P-942209
XX 000000/00
XX 94/35809
ZA 94/10145
An alignment system to overlay abdominal
computer aided tomography and magnetic US 5,299,253
resonance anatomy with single photon
emulsion tomography
27
Application Patent
Title Country No. No.
---------------------------------------------------------------------------------------------------
Methods, Reagents and Test Kits for Determinations US 5256532
of Subpopulations of Biological Entities
Methods for Detection and Quantification of Cell US 5385822
Subsets within Subpopulations of a Mixed Cell
Population
Methods, Reagents and Test Kits for Xxxxxxxxxxxxxx XX 0000000
of Subpopulations of Biological Entities
Methods, Reagents and Test Kits for Determinations EP 909088684
of Subpopulations of Biological Entities
Methods for Detection and Quantification of Xxxx XX 0000000
Subsets within Subpopulations of a Mixed Cell
Population
Methods for Detection and Quantification of Cell EP 9290033564
Subsets within Subpopulations of a Mixed Cell
Population
Methods for Detection and Quantification of Cell JP 0501274
Subsets within Subpopulations of a Mixed Cell
Population
Immunoassay for Determination of Cells US 5374531
Immunoassay for Determination of Cells US 08/569100
Immunoassay for Xxxxxxxxxxxxx xx Xxxxx XX 00000/00
Xxxxxxxxxxx for Determination of Xxxxx XX 0000000
Immunoassay for Determination of Cells EP 949109797
Immunoassay for Determination of Cells JP 06521300
Immunoassay for Xxxxxxxxxxxxx xx Xxxxx XX 000000
Intracellular Immunization US 08/099870
Detection Reagent, Article and Immunoassay US 08/177,732
Method
Detection Reagent, Article and Immunoassay BR PI95064455
Method 9
28
Application Patent
Title Country No. No.
-----------------------------------------------------------------------------------------
Detection Reagent, Article and Xxxxxxxxxxx XX 0000000
Method
Detection Reagent, Article and Immunoassay CN 951914774
Method
Detection Reagent, Article and Immunoassay EP 959061565
Method
Radial Flow Assay, Deliverying Member, US 08/177733
Test Kit and Methods
Radial Flow Assay, Deliverying Member, BR PI95064540
Test Kit and Methods
Radial Flow Assay, Deliverying Member, CA 2180429
Test Kit and Methods
Radial Flow Assay, Deliverying Member, CN 95191473
Test Kit and Methods
Radial Flow Assay, Deliverying Member, EP 959067588
Test Kit and Methods
Neutralizing Antibodies to Respiratory US 09/043522
Syncytial Virus
Neutralizing Antibodies to Respiratory US 09/043522
Syncytial Virus
Neutralizing Antibodies to Respiratory CA 2230127
Syncytial Virus
Neutralizing Antibodies to Respiratory EP 969316330
Syncytial Virus
Neutralizing Antibodies to Respiratory CA 2230116
Syncytial Virus
Neutralizing Antibodies to Respiratory EP 969338102
Syncytial Virus
29
SCHEDULE II
to
Intellectual Property Security Agreement
Trademark Registrations and Applications
30
SCHEDULE II
AccuDx
HumaSPECT(TM)* - Ser. No. 75/170,170, Filed 9/23/96
OncoSPECT(TM)**
Oncovax(TM)*** - Ser. No. 75/084,485, Filed 4/5/96
Onconostika(TM)*
Oncoscan(TM)*
Oncoselect(TM)*
Oncotice(TM)*
Oncostat(TM)*
Apo-Tek Lp(a)***
Apo-Tek Apo E***
KLH Immune Activator***
Zymmune***
* In October 1997, PerImmune, Inc. changed the trademark name of
"OncoSPECT(TM)/CR" to "HumaSPECT(TM)"
** Registration has been applied for.
*** Final name and registration to be completed.
* Assignment to be completed.
31
Item A. TRADMARKS
INTRACEL
Registration
County No. Date Filed Status
--------------- ------------ ---------- -----------------------------------
Australia 608813 08/09/93 Pending
Benelux 537216 08/11/93 Registered
817640487 08/01/93 Pending; reg'n fee paid 6/19/95
Brazil
Canada 734,661 08/09/93 Pending; response to OA due 12/7/95
China 93073886 08/26/93 Pending; published in OG 11/21/94
France 93479055 08/03/93 Registered
Germany Z 11488/10 Wz 08/11/93 Pending; published in OG 10/31/91
Greece 116498/93 09/29/93 Pending
Israel 88567 08/12/93 Pending
Italy RM93C/002727 08/18/93 Pending
Japan 82,893/1993 08/10/93 Pending
Mexico 175,387 08/13/93 Registered 4/28/94; Reg. No. 458,743
South Korea 93-28412 08/11/93 Registered 11/2/94; Reg. No. 000000
Xxxxx 1,779,240 09/09/93 Pending
Switzerland 2857/1994.7 04/27/94 Pending
Taiwan 82039743 08/13/93 Registered 8/16/94; Reg. No. 000000
Xxxxxxxx 253401 10/08/93 Pending; published in OG 4/21/95
United Kingdom 1,544,180 08/09/93 Registered 12/16/94; Reg. No. 1,544,180
United States
TRADEMARK LICENSES
Item B.
None.
32
Item A. Trademarks
1. BIOVITRO
Country Registration No. Date Filed Status
---------------- ------------------ ------------ --------
United States 1,930,690
2. FLEX-TRANS
Country Registration No. Date Filed Status
---------------- ------------------ ------------ --------
United States App 74/429821 Pending
2,049,370
Item B. Trademark Licenses
None.
33
SCHEDULE III
to
Intellectual Property Security Agreement
Copyright Registrations and Applications
34
SCHEDULE III
None
35
SCHEDULE IV
to
Intellectual Property Security Agreement
Licenses
36
SCHEDULE IV
1. Research Collaboration and Distribution Agreement, dated December 22, 1997,
by and between PerImmune, Inc. and Mentor Corporation, pursuant to which
Mentor will fund the costs of implementing and carrying out a clinical
testing program and submitting an application to the United States Food and
Drug Administration for the Company's keyhole limpet hemocyanin composition
product (as described therein) and act as the exclusive distributor of such
product.
2. Letter of Agreement, dated September 12, 1997, by and between Bio-Tek
Instruments, Inc. and Xxxxxxx, Inc., pursuant to which Bio-Tek will act as a
distributor of certain Company products (as defined therein).
3. Distribution Agreement, dated August 1, 1997, by and between Organon
Teknika, B.V. and PerImmune, Inc., pursuant to which Organon will grant
PerImmune an exclusive right to promote, distribute and sell the Products
(as defined therein) within the Territory (as defined therein).
4. Exclusive Distribution Agreement, dated June 16, 1997, by and between
PerImmune, Inc. and Mentor Corporation, pursuant to which Mentor will act as
the exclusive distributor of the Company's bladder diagnostic product.
5. Exclusive Distribution Agreement, dated as of April 1, 1997, by and between
Syncor International Corporation and PerImmune, Inc., pursuant to which
Syncor will act as the exclusive distributor of the Company's HumaSPECT/CR.
6. Distribution Agreement, dated as of March 14, 1997, by and between Intracel
Corporation and Seradyn, Inc., pursuant to which Seradyn will act as
distributor of the Company's Zymmune CD4/CD8 test kit within the United
States.
7. Agreement, dated April 1, 1997, by and between Zeus Scientific, Inc. and
Intracel Corporation, pursuant to which Zeus Scientific grants Intracel a
nonexclusive worldwide right to distribute the ELISA products (as defined
therein).
8. Exclusive Distributor Agreement, dated as of February 1, 1997, by and
between Xxxxxxx, Inc. and HIT Medikal Tibbi Urunler Sanayii ve Ticaret A.S.,
pursuant to which HIT will act as the exclusive distributor of the Company's
INSTI HIV I/I1 components in Turkey and North Cyprus.
9. Exclusive Distributor Agreement, dated as of July 25, 1996, by and between
Xxxxxxx, Inc. and Xxxx-Xxxx, X.X., pursuant to which Finn-Vita will act as
the exclusive distributor of the Company's INSTI HIV I/II components in
Chile.
10. Exclusive Distributor Agreement, dated as of July 1, 1996, by and between
Xxxxxxx, Inc. and DSL Diagnostic Products Incorporated COB "Intermedico,"
pursuant to which DSL will act as the exclusive distributor of various
Company products (as defined therein) in Canada.
37
11. Exclusive Distributor Agreement, dated as of May 8, 1996, by and between
Xxxxxxx, Inc. and AMAR Immunodiagnostics, pursuant to which AMAR will act
as the exclusive distributor of the Company's INSTI HIV I/II components in
India.
12. Distributorship Agreement, dated September 20, 1991, between Xxxxxxx
Diagnostics, division of Xxxxxx Diagnostic Inc. and Biotrin International
Ltd., pursuant to which Biotrin will act as a non-exclusive distributor of
various Company products (as defined therein) within the territory of
Europe.
13. Material Transfer Agreement for Hepatitis C Virus Recombinant
RNA-Dependent RNA Polymerase, dated March 10, 1998, by and between Emory
University and Intracel Corporation.
14. Product Development and License Agreement, dated as of June 30, 1997, by
and between PerImmune and Sigma Diagnostics, Inc., pursuant to which Sigma
is licensing a cell line to be used in a marketable product.
15. Development Agreement and License Agreement, dated December 4, 1996, by
and between Intracel Corporation and its affiliates and subsidiaries and
Alexon Biomedical, Inc., pursuant to which Alexon and Intracel will
develop certain technology relating to a rapid, member-based enzyme-linked
immunoabsorbent assay for the detection of C. difficile Toxin A.
16. Patent License Agreement -- Exclusive, dated December 4, 1996, between
Public Health Service and Intracel Corporation, pursuant to which Public
Health Service grants Intracel an exclusive license under the Licensed
Patent Rights (as defined therein) in the Licensed Territory (as defined
therein).
17. Intellectual Property Security Agreement, dated as of August 8, 1996, by
and among PerImmune Holdings, Inc., PerImmune, Inc., Akzo Nobel Pharma
International, B.V. and Organon Teknika Corporation.
18. Intellectual Property Agreement, dated August 2, 1996, by and between Akzo
Nobel Pharma International, B.V. and PerImmune Holdings, Inc.
19. CMV Antigenemia Agreement, dated May 9, 1996, by and between Xxxxxxx, Inc.
and Argene SA, Biosoft Department, pursuant to which Xxxxxx grants Xxxxxxx
exclusive distribution rights to the Assay Kit or Components (as defined
therein) in the United States and a non-exclusive distribution right to
the Assay Kit or Components (as defined therein) in Asia, Australia, South
Africa, Antilles, South America and Central America.
20. Research Collaboration and License Agreement, dated as of January 1, 1996,
by and between PerImmune, Inc. and Xxxxxx Healthcare Corporation, pursuant
to which PerImmune will perform research and development services for the
benefit of Baxter in accordance with the Research Plans (as defined
therein).
38
21. Pursuant to an Agreement dated July 14, 1995, the Company has agreed to
make certain Vpr peptides from HIV-1 available to the University of
Minnesota in return for the option to obtain a royalty-bearing exclusive
license to any patent or patent application which the University of
Minnesota or its scientists may be granted in respect of an invention
arising out of the use of the Vpr peptides.
22. License Agreement, dated July 25, 1994, by and between Arch Development
Corporation and Organon Teknika Corporation, pursuant to which Arch grants
Organon an exclusive license to make, have made, use and sell Licensed
Products (as defined therein) within the Territory (as defined therein).
23. Agreement, dated July 18, 1994, between Intracel Corporation and the World
Health Organization, pursuant to which Intracel will engage in the
development of an INSTI diagnostic test for detection of the measles
virus.
24. License Agreement, dated June 1, 1994, by and between Xxxxxx Xxxxxxxxx
University and Intracel Corporation, pursuant to which Xxxxxx Xxxxxxxxx
grants Intracel an exclusive worldwide license to manufacture, market and
distribute the Products (as defined therein).
25. Assignment, dated September 28, 1993, by and between Xxxxxxxxx Xxxxxxxx
and Intracel Corporation, pursuant to which Xxxxxxxxx Xxxxxxxx will sell,
assign, transfer and deliver to Intracel all of his right, title and
interest in the Future Intellectual Rights (as defined therein) and all
proceeds of, and rights associated with the Future Intellectual Rights.
26. Research Agreement, dated April 9, 1993, as amended, between Intracel
Corporation and Xxxxxx Xxxxxxxxx University, pursuant to which Xxxxxx
Xxxxxxxxx will pursue a research project in accordance with the Protocol
(as defined therein).
27. Licensing Agreement, dated as of April 16, 1991, between American
Bio-Technologies, Inc. ("ABT") and the Medical Reseach Council, pursuant
to which the Medical Research Council grants ABT a nonexclusive worldwide
right and license to make, have made, lease and sell the Licensed Products
(as defined therein).
28. License Agreement, dated June 14, 1990, by and between ABT and Xxxxxxx-Xx
Xxxxx, Inc., pursuant to which Xxxxxxx-Xx Xxxxx grants ABT a nonexclusive
license in the United States to make and sell for research purposes only
the Licensed Products (as defined therein).
29. Licensing Agreement, dated May 18, 1990, as amended, by and between Xxxxxx
Healthcare Corporation, Xxxxxxx Diagnostic Division, and Virginia Tech
Intellectual Properties, Inc., pursuant to which Virginia Tech grants
Xxxxxxx a nonexclusive license to manufacture, have made for it, use,
lease, and/or sell Licensed Product(s) (as defined therein).
39
SCHEDULE II
AccuDx
HumaSPECT(TM)* - Ser. No. 75/170,170, Filed 9/23/96
OncoSPECT(TM)*
Oncovax(TM)** - Ser. No. 75/084,485, Filed 4/5/96
Onconostika(TM)
Oncoscan(TM)
Oncoselect(TM)
Oncotice(TM)
Apo-Tek Lp(a)***
Apo-Tek Apo E***
KLH Immune Activator***
Zymmune***
* In October 1997, PerImmune, Inc. changed the trademark name of
"OncoSPECT(TM)/CR" to "HumaSPECT(TM)"
** Registration has been applied for.
*** Final name and registration to be completed.